DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The claims filed 07/21/2025 have been entered and fully considered. Claims 1-8 are pending and examined herein.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0252059 A1 (“Choi ‘059”).
Regarding claims 1 and 4, the preamble recites “A lower protecting plate of a battery module for an electric car.” The recitation “of a battery module” is interpreted as limiting. When reading the preamble in the context of the entire claim, the recitation “for an electric car” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Choi ‘059 recites a lower case body 200 of a battery pack case for an electric vehicle (Abstract; Fig. 2). The lower case body comprises a long fiber reinforced thermoplastics (“first sheet”) in which a long fiber is reinforced in a plastic matrix ([0063]). The plastic matrix comprises a thermoplastic resin ([0064]). Continuous fiber reinforced members 220a, 220b, 220c (“second sheet”) are locally disposed in the lower case body 200 (Figs. 8-11; [0089]-[0106]). The continuous fibers are disposed in a plastic matrix ([0103]]-[0106]). Choi ‘059 discloses the continuous fiber is provided as a woven fabric ([0108]).
Choi ‘059 further discloses one or both of the continuous fiber reinforced members 220a and 220b can be provided (Figs. 8, 9). The lay-up ratio therefore falls within the claimed range (i.e. 1:1 or 1:2).
While Choi ‘059 does not expressly disclose the matrix in the second sheet is a resin, Choi ‘059 teaches the concept of providing the same matrix material to improve interfacial bonding between components ([0078]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the same resin material to improve interfacial bonding.
It is deemed that the bending strength and bending stiffness are inherent characteristics and/or properties of the specifically disclosed fiber-reinforced plastic composite. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 5, modified Choi ‘059 discloses the lower protecting plate of claim 1. It is deemed that the bending elongation is an inherent characteristic and/or property of the specifically disclosed fiber-reinforced plastic composite. See the sections of MPEP 2112 cited above.
Regarding claim 6, modified Choi ‘059 discloses the lower protecting plate of claim 1. It is deemed that the tensile strength, tensile stiffness, and tensile elongation are inherent characteristics and/or properties of the specifically disclosed fiber-reinforced plastic composite. See the sections of MPEP 2112 cited above.
Regarding claim 7, modified Choi ‘059 discloses the lower protecting plate of claim 1. It is deemed that the specific gravity and falling weight impact strength are inherent characteristics and/or properties of the specifically disclosed fiber-reinforced plastic composite. See the sections of MPEP 2112 cited above.
Regarding claim 8, modified Choi ‘059 discloses the lower protecting plate of claim 1. It is deemed that the heat conductivity is an inherent characteristic and/or property of the specifically disclosed fiber-reinforced plastic composite. See the sections of MPEP 2112 cited above.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0252059 A1 (“Choi ‘059”) as applied to claim 1 above, and further in view of US 2012/0103714 A1 (“Choi ‘714”).
Regarding claim 2, modified Choi ‘059 discloses the lower protecting plate of claim 1. Choi ‘059 further discloses the long fiber has an average length of 20 mm or more ([0025]) and an aspect ratio (L/D) of 1,000 to 10,000 ([0086]). The claimed length and section diameter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the length and diameter disclosed by Choi ‘059 overlap the length and diameter as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05. Furthermore, Choi ‘059 discloses the aspect ratio is provided to achieve a sufficient stiffness reinforcing effect ([0085]).
Choi ‘059 further discloses the long fibers are glass fibers ([0065]).
Choi ‘059 discloses the plastic matrix may include one or more thermoplastic resins ([0064], [0077], claims 4-5) but does not expressly disclose the matrix resin of the first sheet is thermosetting matrix resin.
Choi ‘714 discloses a battery pack housing assembly for an electric vehicle (Abstract). Choi ‘714 further discloses the battery pack housing comprises a fiber-reinforced plastic composite material which may be a thermoplastic resin or a thermosetting resin ([0020], [0042]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the thermoplastic resin of Choi ‘059 for the thermosetting resin of Choi ‘714 because Choi ‘714 shows them to be equivalent matrix materials known in the art for the same purpose.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0252059 A1 (“Choi ‘059”) as applied to claim 1 above, and further in view of WO 2018/056723 A1 (“Oh” – US 2020/0368998 A1 cited herein as an English equivalent).
Regarding claim 3, modified Choi ‘059 discloses the lower protecting plate of claim 1. Choi ‘059 does not expressly disclose the continuous fiber has a section diameter of 1 µm to 200 µm.
Oh discloses a fiber reinforced composite material (Abstract). The fiber may be a continuous fiber ([0036]). The fibers have a cross section the diameters of which range, for instance, from about 1 µm to about 200 µm. When a cross section of each of the strands of fiber of the fiber reinforcement has the above range of diameters, 1 to 30 layers of each of the strands of fiber of the fiber reinforcement may be arranged in parallel while having orientation, and the resin matrix may be easily impregnated during the process of manufacturing the fiber reinforced sheet. Additionally, the fiber reinforced sheet may have proper thickness ([0038]). For these reasons, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the section diameter of the continuous fiber as taught by Oh.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-10, and 12-16 of copending Application No. 17/341,940 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the additional features recited in the instant claims are deemed to be inherent properties and/or characteristics of the fiber-reinforced plastic composite of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 15-20, and 22-25 of copending Application No. 17/277,472 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the additional features recited in the instant claims are deemed to be inherent properties and/or characteristics of the fiber-reinforced plastic composite of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-5:45PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727